Appeal No. 1999-0111
Application 08/484,593
4-methyl umbelliferyl galactoside (a galactosidase substrate). Koumura, the abstract; col.
2, lines 14-44.
According to the examiner,
It would have been obvious to one of ordinary skill in the art at the time the
invention was made to test samples of food and water as shown by Koumura with
the method of Sussman or Carr because Sussman and Carr teach biological
samples in general and the method of Koumura is closely related to the methods of
Sussman and Carr and teaches both foods and water as samples [Answer,
p. 6].
We disagree.
It is well established that the examiner has the initial burden under § 103 to
establish a prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445,
24 USPQ2d 1443, 1444 (Fed. Cir. 1992); In re Piasecki, 745 F.2d 1468, 1471-72,
223 USPQ 785, 787-88 (Fed. Cir. 1984). It is the examiner’s responsibility to show that
some objective teaching or suggestion in the applied prior art, or knowledge generally
available [in the art] would have led one of ordinary skill in the art to combine the
references to arrive at the claimed invention. Pro-Mold & Tool Co. v. Great Lakes Plastics,
Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626, 1629 (Fed. Cir. 1996). This the examiner
has not done.
Here, we find that the rejection fails because the examiner has not come to grips
with the fact that all of the claims, i.e., both the claims to the methods and to the bacterial
growth medium, require the presence of a specific combination of enzyme substrates in
said growth medium. Thus, the burden is on the examiner to demonstrate
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